Ex Parte Stadjuhar et al

Board of Patent Appeals and Interferences

Mar 26, 2008

10610141 (B.P.A.I. Mar. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT CHARLES STADJUHAR, JR. and
CECIL SHELDON RENFRO
____________

Appeal 2008-0186
Application 10/610,141
Technology Center 3600
____________

Decided: March 26, 2008
____________

Before TERRY J. OWENS, JENNIFER D. BAHR, and MICHAEL W.
O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Charles Stadjuhar, Jr. and Cecil Sheldon Renfro (Appellants)
appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims
1-21, which are all of the pending claims. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).
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The Invention
Appellants’ claimed invention is directed to an outdoor electronic sign
enclosure that includes a sealed housing, a heat exchanger that forms part of
the sealed housing, and an air circulation system coupled to the heat
exchanger (Specification 3:3-7). Claim 1 is illustrative of the claimed
invention and reads as follows:
1. An outdoor electronic sign enclosure,
comprising:
a sealed housing;
a heat exchanger forming a part of the sealed
housing; and
an air circulation system coupled to the heat
exchanger.
The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Agee US 4,807,441 Feb. 28, 1989
Lie US 5,020,253 Jun. 4, 1991
Stadjuhar US 5,497,573 Mar. 12, 1996
Heady US 5,991,153 Nov. 23, 1999
Stoller US 6,164,369 Dec. 26, 2000

The following rejections are before us for review:
(1) Claims 1-3, 6, 9-12, and 191 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Heady.
(2) Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Heady.

1 The Examiner inexplicably rejects claim 19 as anticipated by Heady and
independent claim 15, from which claim 19 depends, as unpatentable over
Heady in view of Lie.
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(3) Claims 4, 5,2 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Heady in view of Stoller or Agee.
(4) Claims 7 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Heady in view of Stadjuhar.
(5) Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Heady in view of Stoller or Agee, and further in view of Stadjuhar.
(6) Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Heady in view of Lie.
(7) Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Heady in view of Lie and further in view of Stoller or Agee.
(8) Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Heady in view of Stadjuhar and further in view of Stoller or Agee.
(9) Claims 1-5 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Agee.
(10) Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Agee.

2 In the Final Rejection (mailed December 7, 2004), the Examiner rejected
claim 5 as anticipated by Heady, and did not include claim 5 in the rejection
under 35 U.S.C. § 103(a) based on the combination of Heady and Stoller or
Agee. In the Answer, the Examiner drops claim 5 from the rejection under
35 U.S.C. § 102(b) as anticipated by Heady and includes claim 5 in the
rejection under 35 U.S.C. § 103(a) as unpatentable over Heady in view of
Stoller or Agee (Answer 3, 5). While the Examiner appears to make a new
rejection of claim 5 without properly identifying it as such, any allegation
that an examiner’s answer contains a new ground not identified as such is
waived if not timely raised by petition under 37 C.F.R. § 1.181(a) within two
months of the answer. Manual of Patent Examining Procedure (MPEP) §
1207.03 – IV. The electronic record for this application does not indicate
that any such petition has been filed.
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The Examiner provides reasoning in support of the rejections in the
Answer (mailed October 3, 2006). Appellants present opposing arguments
in the Appeal Brief (filed June 30, 2006).

THE ISSUES
The first issue in this appeal is whether Heady discloses a heat
exchanger forming a part of the sealed housing, as required in independent
claims 1, 9, and 15. The second issue in this appeal is whether Agee
discloses a heat exchanger forming a part of the sealed housing, as required
in independent claim 1.

FINDINGS OF FACT (FF)
1. Heady (fig. 2) discloses an electronic display comprising a sealed
display housing 105 (col. 2, l. 55; col. 6, l. 43), circuit boards 120,
130, 220 contained in the sealed housing (col. 7, ll. 33-34, 36-37), a
heat exchanger (external fins 210 and internal fins 215) (col. 6, l. 42 to
col. 7, l. 32), and an air circulation system including rear fan 150
arranged to push air downward through fins 215 (col. 7, ll. 53-56).
2. Heady teaches one embodiment wherein the internal fins 215 and
external fins 210 are “formed unitary to display housing 105. Such
would be the case if they were machined from a single section of
aluminum.” (Col. 6, ll. 56-59.)
3. Agee discloses a sealed enclosure 10 having therein a heat generating
source 12, such as electrical circuitry, a fan 32, and a heat exchanger
14. “The heat exchanger 14 can be formed either as a portion of one
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wall 16 of the enclosure 10 or the wall itself.” (Col. 2, ll. 23-29; col.
2, ll. 51-53; fig. 1.)
4. Agee’s heat exchanger 14 comprises first and second plates 22 and 24,
respectively, in generally spaced parallel relationship, and heat
exchange fin elements 26 located between the plates 22 and 24. Heat
exchange fin elements 26 can be individual fins or, more likely,
formed as part of a corrugated sheet placed between and bonded to
plates 22 and 24. (Col. 2, ll. 30-40; figs. 2-6.) Agee teaches that “the
heat exchanger 14 and in particular second side plate 24 can form a
portion of wall 16 or can form the wall itself” (col. 2, l. 67 to col. 3, l.
1).

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, there must be no
difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention. Scripps
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir.
1991). It is not necessary that the reference teach what the subject
application teaches, but only that the claim read on something disclosed in
the reference, i.e., that all of the limitations in the claim be found in or fully
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772
(Fed. Cir. 1983).

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ANALYSIS
Rejection (1)
Appellants argue that Heady does not disclose heat exchangers that
form part of the housing, as called for in each of independent claims 1, 9,
and 153 (Appeal Br. 9). Appellants do not contend that Heady lacks any
other limitation of independent claims 1, 9, and 15. The Examiner contends
that external fins 210 and internal fins 215, formed unitary to the housing
105, are part of the housing (Answer 9). According to Appellants, the use of
the term “external” to describe fins 210 means that they are external to the
housing and thus do not form part of the housing (Appeal Br. 9).
Appellants’ argument is not well founded. The term “external” used
in this context merely refers to the direction in which the fins are facing.
Heady’s external fins 210 face to the exterior of the housing 105, while
internal fins 215 face to the interior of the housing 105. Heady quite clearly
discloses an embodiment in which the internal fins 215 and external fins 210
are “formed unitary to display housing 105,” in the sense of being
“machined from a single section of aluminum” (FF2). The internal fins 215
and external fins 210 thus form a part of the sealed display housing 105 of
Heady.
Appellants’ argument does not demonstrate error in the Examiner’s
rejection of independent claims 1, 9, and 15, or dependent claims 2, 3, 6, 10-
12, and 19, for which Appellants present no separate arguments apart from
the above-discussed argument directed to claims 1, 9, and 15. We sustain
the rejection of claims 1-3, 6, 9-12, and 19 as anticipated by Heady.

3 While the Examiner does not include claim 15 in this rejection, claim 19,
which is included, depends from claim 15.
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Rejections (2) through (8)
In contesting these rejections, Appellants rely solely on their
argument, discussed above, that Heady lacks a heat exchanger forming part
of the sealed housing (Appeal Br. 10-12). For the reasons discussed above,
this argument is not persuasive. We sustain the rejections of claim 8 as
unpatentable over Heady; claims 4, 5, and 13 as unpatentable over Heady in
view of Stoller or Agee; claims 7 and 204 as unpatentable over Heady in
view of Stadjuhar; claim 14 as unpatentable over Heady in view of Stoller or
Agee, and further in view of Stadjuhar; claims 15-17 as unpatentable over
Heady in view of Lie; claim 18 as unpatentable over Heady in view of Lie
and further in view of Stoller or Agee; and claim 21 as unpatentable over
Heady in view of Stadjuhar and further in view of Stoller or Agee.
Rejection (9)
Appellants do not present any separate arguments for the patentability
of dependent claims 2-5 apart from independent claim 1 (Appeal Br. 10).
Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2007), we select
claim 1 as the representative claim to decide the appeal of this rejection,
with claims 2-5 standing or falling with claim 1.
Appellants argue that Agee’s heat exchanger is the fin elements 26
and that the side plate 24 is just part of the housing, and not a heat
exchanger. Thus, according to Appellants, Agee’s heat exchanger, i.e., fin

4 Appellants’ argument is not even commensurate in scope with claim 20, or
claim 21 depending from claim 20, which does not require a heat exchanger
forming part of the housing, but, rather, recites “a heat exchanger attached to
the sign housing.” Limitations not appearing in the claims cannot be relied
upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
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elements 26, which are bonded to the two plates 22 and 24 (FF4), is bonded
to the housing, not forming part of the housing. (Appeal Br. 10.)
Appellants’ argument is flawed in two respects. First, claim 1 does
not require that the heat exchanger be a unitary part, rather than multiple
parts bonded together, as in the case of Agee’s heat exchanger 14. Further,
Appellants’ contention that only the fin elements 26, and not the fin
elements in combination with plates 22 and 24, form the heat exchanger flies
in the face of Agee’s description of heat exchanger 14 as including the plates
22 and 24 and the heat exchange fin elements 26 (FF4). Moreover, Agee
plainly states that the heat exchanger 14 can be formed as a portion of one
wall 16 of the enclosure or the wall itself (FF3 and FF4). We thus conclude
that Agee teaches a sealed housing and a heat exchanger forming a part of
the sealed housing, as called for in claim 1.
Appellants’ arguments do not persuade us the Examiner erred in
rejecting claim 1 as anticipated by Agee. We thus sustain the rejection of
claim 1, and claims 2-5 standing or falling with claim 1, as anticipated by
Agee.
Rejection (10)
Appellants rely solely on their argument that Agee lacks a heat
exchanger forming a part of the sealed housing, as required in claim 1, for
the patentability of claim 8 (Appeal Br. 10). For the reasons discussed
above in regard to the rejection of claim 1 as anticipated by Agee,
Appellants’ argument is likewise unpersuasive of the patentability of claim 8
over Agee. We sustain the rejection of claim 8 as unpatentable over Agee.

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CONCLUSION
All of the Examiner’s rejections are sustained. The decision of the
Examiner to reject claims 1-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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